Case: 21-113 Document: 10 Page: 1 Filed: 02/01/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: SK HYNIX INC., SK HYNIX AMERICA INC.,
Petitioners
______________________
2021-113
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-194-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before NEWMAN, MOORE, and STOLL, Circuit Judges.
MOORE, Circuit Judge.
ORDER
SK hynix Inc. and SK hynix America Inc. (collectively,
“SK hynix”) petition for a writ of mandamus directing the
United States District Court for the Western District of
Texas to transfer the underlying case to the United States
District Court for the Central District of California, or al-
ternatively, directing the Western District of Texas to stay
the proceedings and to rule on SK hynix’s pending motion
to transfer. Netlist, Inc. opposes the petition.
Netlist filed this patent infringement suit against SK
hynix in March 2020. On May 4, 2020, SK hynix moved to
Case: 21-113 Document: 10 Page: 2 Filed: 02/01/2021
2 IN RE: SK HYNIX INC.
transfer the case. The district court received Netlist’s re-
sponse on May 18, 2020 and SK hynix’s reply on May 26,
2020 but has yet to rule. Meanwhile, the trial judge has
ordered the parties to engage in extensive discovery and
has scheduled a Markman hearing for March 19, 2021. On
December 15, 2020, SK hynix moved to stay proceedings
pending disposition of its transfer motion, but, on January
6, 2021, the court informed the parties of its policy “to pro-
ceed with all deadlines while [it] resolves the jurisdictional
issues in parallel.” Appx0570. SK hynix then filed this pe-
tition. On January 27, 2021, this court directed Netlist to
respond by February 1, 2021. On January 28, 2021, the
district court issued an order setting a hearing on the
transfer motion for the morning of February 2, 2021.
Applying the law of the United States Court of Appeals
for the Fifth Circuit in cases arising from district courts in
that circuit, this court has held that mandamus may be
used to correct a patently erroneous denial of transfer or
an arbitrary refusal to act on such request. See, e.g., In re
Microsoft Corp.,
630 F.3d 1361, 1363 (Fed. Cir. 2011); In re
Nintendo, Ltd.,
589 F.3d 1194, 1201 (Fed. Cir. 2009); In re
Genentech Inc.,
566 F.3d 1338, 1348 (Fed. Cir. 2009); In re
Google, No. 2015-138,
2015 WL 5294800 (Fed. Cir. Jul. 16,
2015). That standard is an exacting one, requiring the pe-
titioner to establish that (1) it has a clear and indisputable
legal right to relief; (2) does not have any other method of
obtaining the relief requested; and (3) that the writ is ap-
propriate under the circumstances. Cheney v. U.S. Dist.
Court for D.C.,
542 U.S. 367, 380–81 (2004).
We agree with SK hynix that the district court’s han-
dling of the transfer motion up until this point in the case
has amounted to egregious delay and blatant disregard for
precedent. As we recently reiterated, “[a]lthough district
courts have discretion as to how to handle their dockets,
once a party files a transfer motion, disposing of that mo-
tion should unquestionably take top priority.” In re Apple
Inc.,
979 F.3d 1332, 1337 (Fed. Cir. 2020) (citations
Case: 21-113 Document: 10 Page: 3 Filed: 02/01/2021
IN RE: SK HYNIX INC. 3
omitted); see also In re Horseshoe Entm’t,
337 F.3d 429, 433
(5th Cir. 2003) (“[I]n our view disposition of that [transfer]
motion should have taken a top priority in the handling of
this case by the . . . District Court.”). No such priority was
given to the motion here, as it simply lingered unneces-
sarily on the docket while the district court required the
parties to proceed ahead with the merits.
In light of the fact that the district court has now sched-
uled a hearing on the motion and is presumably proceeding
toward a resolution of the transfer issue, we are not pre-
pared to say that a writ of mandamus to compel the court
to act on the motion would be necessary or appropriate at
this juncture. Nor can we say that SK hynix has no alter-
native avenue to obtain meaningful relief on its request to
transfer the case, as we fully expect that the district court
will expeditiously rule on its motion. However, given the
lengthy delay and upcoming Markman hearing, we find it
appropriate to grant the petition to the extent that the dis-
trict court must stay all proceedings concerning the sub-
stantive issues of the case and all discovery until such time
that it has issued a ruling on the motion capable of provid-
ing meaningful appellate review of the reasons for its deci-
sion. See In re Lloyd’s Register N. Am., Inc.,
780 F.3d 283,
290 (5th Cir. 2015). Precedent compels entitlement to such
relief and the district court’s continued refusal to give pri-
ority to deciding the transfer issues demonstrates that SK
hynix has no alternative means by which to obtain it.
Accordingly,
IT IS ORDERED THAT:
The petition is granted to the extent that the district
court must stay all proceedings concerning the substantive
issues in the case until such time that it has issued a ruling
on the transfer motion capable of providing meaningful ap-
pellate review of the reasons for its decision. The parties
shall inform the court when the district court has issued
such an opinion.
Case: 21-113 Document: 10 Page: 4 Filed: 02/01/2021
4 IN RE: SK HYNIX INC.
FOR THE COURT
February 01, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s29
